patent: laws of patent and filing process / a presentation at nalsar hyderabad - vikram pratap singh...

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Law of Patents and filing process

By

Vikram Pratap Singh Thakur

Brain League IP Services Now BananaIP

Agenda

• Patentability requirements (overview)

• Patent Process in India

• Online patent filing process in India

Patent

• What is a patent?

• Rights Make Use Sell Offer for sale Import

Patentability requirements

• Patentable subject matter

• Utility

• Novelty

• Non-obviousness

• Specification

Patentable Subject Matter

• Inclusion list Product or Process

• Exclusion list Section 3 and 4

Exclusion list• Frivolous inventions and Inventions against

Natural Laws

• Inventions contrary to Public Order or Morality or prejudicial to Life or Environment

• Scientific Principle or Abstract Theory or Discovery

• New Form or New Property or New Use

• Mere Admixture

• Mere Arrangement or Re-arrangement of devices or duplication

Exclusion list cont…

• Method of Agriculture or Horticulture

• Medical Methods

• Plants and Animals

• Mathematical Algorithm and Computer Program

• Copyrightable works and Presentations

• Mental Act and Method of playing a Game

• Integrated Circuits

• Traditional Knowledge

• Atomic Energy (sec 4)

Utility (Industrial applicability)• Capable to be used in the industry

• At least used for one purpose

Novelty

• New

• Not part of prior art

• Single reference

Non-obviousness (Inventive Step)

• Inventive step Technical advance; and/or Economic significance

• Person skilled in the art

• Multiple references combined

Specification

• Description of the invention Enablement Best mode

INVENTIONS

Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

PATENTS

Kalyan’s Patent Filter Model

Illustration• X invents a door knob made of clay and

porcelain, which could be used in very low or high temperatures without deformation and was cheaper than existing knobs. The prior art relating to the knob includes: Door knobs made of metal, which were being

sold and used extensively; and Kitchen utensils made of clay and porcelain.

Indian Patent Procedure

Filing

• Contents of application (provisional or complete)

• Persons entitled to apply

• Place of application

• Types of application

• Priority date

• Documents

Contents of specifications

• Title (P)

• Abstract (P)

• Written Description (P)

• Drawings (where necessary)

• Sample or Model (if required by the examiner)

• Enablement and Best Mode

• Claims

• Deposit (Microorganisms)

Persons entitled to apply

• True and first inventor of the invention

• Assignee

• Legal representative

Place of application

Patent offices

Territorial jurisdiction

Mumbai The states of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, The Union Territories of Daman and Diu and Dadra and Nagar Haveli.

Delhi The states of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttranchal, National capital territory of Delhi and the union territory of Chandigarh.

Chennai The states of Andhra Pradesh, Karnataka , Kerala, Tamil Nadu and the union territories of Pondicherry and Lakshadweep.

Kolkata (head office)

Rest of India

Various types of applications in India• Ordinary application

• Convention application

• PCT international application

• PCT National phase application

• Application for Patent of addition

• Divisional Application

Priority Date

• Date of first filing

• Date of foreign filing if foreign application filed earlier

• Date of PCT international application

Documents to be submitted at the time of filing• Form 1Form 1 - Application for the grant of patent.

• Form 2Form 2 - Provisional or Complete Specification.

• Form 3Form 3 - Statement and undertaking by the applicant.

• Form 5Form 5 - Declaration as to inventorship.

• Form 26Form 26 - Authorization of patent agent or any other person. (if filed through an agent)

• Priority document details have to be filed for a Convention application.

• Proof of right if the application is made by the assignee.

• Death Certificate of deceased - Legal Representative.

Publication • Date of publication

• Open for public inspection

• Rights of patentee starts

• Early publication

• Circumstances when publication not done

Publication after 18 months

Examination

• Request for examination

• Formal examination verifying the propriety and correctness of all

documents verifying the patentability

• First Examination Report (FER)

• Amendments

Grant

• Order for grant

• Fees

• Grant

• Publication

• Rights of patentees can be enforced

Publication of granted patents

E – filing in IndiaE – filing in India

Digital signing of an application

Payment

List of filed applications

View status of application

Generate and print acknowledgement

Certified and True copy

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